Judge settles Scotch-whisky naming affrontery

Those about The Mill liquor store will be needing a stiff drink after one of its scotch whisky trademarks was declined registration.

Wellington High Court Justice Stephen Kos has ruled MacGowans can not be registered as a trademark following the Scotch Whisky Association’s successful appeal against it.

The appeal was allowed on just one of the three issues – whether The Mill intended to use the mark in respect of the meaning of ‘spirits.’

The Scotch Whisky Association appealed an earlier decision from Trade Mark’s assistant commissioner Jennie Walden not to revoke a trademark for MacGowans’ whisky-flavoured spirit.

The Mill applied for the trademark in October 2009 and in May 2010, the association objected to the trademark.

In his decision Justice Kos found the assistant commissioner was wrong to find the intended use of the trade mark fell within the permitted specification but she was right to conclude people were not likely to be fooled by the product.

“I uphold the decision of the assistant commissioner that The Mill had established a substantial number of persons were not likely to be deceived or confused by use of the trade mark on whisky-flavoured spirits.”

He said those who would be targeted might not be expert in relation to whisky, but would neither be careless, gullible, nor stupid.

He said the price of the spirit – under $10 a bottle – was also likely to be a factor in people’s decision-making.

“It is not likely a substantial number of such purchasers would be confused that a tan-coloured alcohol bearing the name MacGowans, sold potentially in the vicinity of, but at a significant price remove from, Scotch whiskies would be either Scotch whisky, contain Scotch whisky or come from Scotland.”

However he said at 13.9% alcohol by volume, MacGowans was not a spirit in terms of the meaning of the word in its context.

“At the very least, a product incapable of being labelled “spirits” cannot be treated as spirits for the purposes of the specification.”

A spirit is defined as a potable alcoholic distillate, including whisky, brandy, rum, gin, vodka and tequila, which, unless otherwise required, contains at least 37% alcohol by volume, produced by distillation of fermented liquor derived from food sources, so as to have the taste, aroma and other characteristics generally attributable to the particular spirit.

The decision means the trademark can not be registered. The Scotch Whisky Association is also entitled to costs.

bcunningham@nbr.co.nz